In the first of the Ideas and the Law Series, I addressed what steps you can take to protect an idea. Technically there is little legal protection available unless the person to whom you disclose an idea has a contractual obligation to keep the information confidential, or otherwise not use it. However, if you have developed your idea into something that qualifies for protection as intellectual property you can prevent a third party from using the protected works without permission, and compensation.

The remainder of the Ideas and the Law Series will discuss the four major types of intellectual property:

1) Patent
2) Copyright
3) Trademark
4) Trade Secret

Patent

A patent may be granted to processes, machines, methods and compositions of matter that are new, non-obvious and useful. An invention can be for a new product or an improvement on an existing product. Patents are the exclusive rights inventors have to prevent others from making, using, selling or importing their inventions without permission.

The rights are not automatic. Inventors must file an application that sets forth the claims to which the patent would apply with the government to obtain the patent. In the United States, the Patent and Trademark Office can award three types of patents:

1) Utility Patents for discoveries and inventions for a term of 20 years;
2) Design Patents for new and original ornamental design for a term of 14 years; and
3) Plant Patents for the invention of, or discovery of, and asexual reproduction of a new plant variety for a term of 20 years.

To obtain the benefits of a patent, an application must be filed that is both timely and in the right person(s) names. The patent application must be filed in the names of all inventors who contribute a “definite and permanent idea of the complete and operative invention” to the conception of the invention. Under current law failure to file a patent application within one (1) year of the public use, sale, marketing or publishing description of the invention will result in the invention passing into the public domain. In the event that a patent issues on an invention that is later challenged evidence of disclosure of the idea prior to one year before the application was filed will result in the patent being cancelled. However claimants can stop the clock after the initial disclosures by filing a provisional patent application which provides applicants an additional year to file the full application.

Significantly, in September 2011, President Obama signed the American Invents Act, a patent reform bill, into law. The Act, once fully enacted, will overhaul the manner in which patents are prosecuted and enforced. Significantly, beginning on March 16, 2013, the United States will transition from a first-to-invent jurisdiction to a first-inventor-to-file jurisdiction. The transition will create a “race to the courthouse” situation for inventors, and potentially be devastating for small inventors.

Strategic Practices:

1) Share the invention sparsely with people who need to know and only subject to a Confidentiality Agreement
2) Keep an “Invention Notebook” that sets forth the claims of the invention, when disclosures were made, and other pertinent information
3) Have written agreements with all people (employees, contractors, friends) who contribute to the invention

Come back for the next Ideas and the Law post on Trademarks!

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About Nancy Prager

Nancy Prager is an attorney based in Washington, D.C. She represents a wide range of clients on matters from intellectual property to estate planning. Before starting her own practice, she practiced with firms in Memphis and Atlanta, as well as providing business development services to technology companies. She launched her practice to offer strategic legal services to clients at an affordable rate.
Additionally, Nancy is a sought after speaker and writer on issues related to the convergence of intellectual property, technology and media. Nancy was asked to write a series of commentaries for News.com on the emerging legal issues related to the transmission of content on the internet. She has spoken to organizations and conferences around the country on issues related to the convergence of technology, content and intellectual property, as well as strategic legal issues for companies, individuals and artists. Journalists often rely on Nancy as a resource for emerging legal issues.
Nancy has a strong commitment to social justice. She has founded, or co-founded, a number of organizations and programs that provide tangible services to their constituencies. For example, while a student in law school she developed the Domestic Violence Advocacy Center that provides legal services to victims of domestic violence. Additionally, she has been involved with a number of organizations that provide services to children and their families, including serving on the boards of the Harwood Center and Porter Leath Children’s Services.
She is a graduate of Wake Forest University School of Law and the University of Wisconsin, Madison. She is a member of the District of Columbia Bar, the State Bar of Georgia and the State Bar of Tennessee. She has been a member of a variety of legal organizations including the Copyright Society of the USA and the American Bar Association.